The Enlarged Board of Appeal of the EPO issued decision G1/19 in March 2021 which relates to the patentability of computer-implemented simulations.

This decision came about as a result of a decision to refuse European Patent Application No. 03793825.5 due to an alleged lack of inventive step during examination proceedings. This application is related to modeling a building and simulating the movement of a pedestrian crowd within the building. The Applicant appealed the refusal to the Technical Board of Appeal, which in turn, referred the following three questions to the Enlarged Board of Appeal:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect that goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

Summary of Decision:

In the decision, the Enlarged Board of Appeal confirmed that the established case law to assess computer-implemented inventions should be used in the assessment of computer-implemented simulations. This involves a two-hurdle approach. The first hurdle is that the invention must satisfy Article 52 of the European Patent Convention, in that it must not relate to the excluded subject matter, and must be new, inventive, and be industrially applicable. The second hurdle relates to how to apply the problem-solution approach for inventive step to computer-implemented inventions that encompass non-technical features, which is known as the COMVIK approach.

According to the COMVIK approach, it must be determined whether a claimed feature contributes to the technical character of an invention, and only features that contribute to technical character are to be considered when assessing inventive step, that is when assessing whether they contribute to a technical solution of a technical problem in view of the closest prior art. If the invention does not solve a technical problem over the closest prior art, it has no distinguishing features which could contribute to inventive step. Thus, if the models and algorithms used in a computer-implemented simulation contribute to a technical effect, they may be taken into account when assessing inventive step. The Enlarged Board of Appeal considered that the same considerations apply to simulations claimed as part of a design process.

The Enlarged Board of Appeal noted that it is not decisive whether the simulated system or process is technical or not. Rather, what is relevant is whether the simulation of the system or process contributes to the solution of a technical problem. Thus, any technical effect going beyond the normal electrical interactions within the computer on which the simulation is implemented may be considered for inventive step, known as a further technical effect.

It should be noted that although the Enlarged Board of Appeal stated that such further technical effects would typically be “technical effects on a physical entity in the real world” or technical effects requiring “a direct link with physical reality”, they acknowledged that they could also be other effects, such as technical effects within the computer system or network, achieved for example by adaptations to the computer system or its operation which result in technical effects, such as for example better use of storage capacity or bandwidth.  The Enlarged Board of Appeal also advised that the further technical effect had to be obtained over the entire scope of the claimed invention and that only those technical effects which are at least implied in the claims could be considered.

Accordingly, the questions of law referred to the Enlarged Board of Appeal were answered as follows:

1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
2. For that assessment, it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

Conclusion:

It is welcome news that there is no bar to the patentability of computer-implemented simulations per se and that we now have clear guidance from the EPO on how computer-implemented simulations will be assessed for inventive step. To maximise the chances of a computer-implemented simulation invention being allowed in Europe, we would recommend that the patent specification be initially drafted to highlight the technical effect of the simulation beyond the simulation’s implementation on a computer.

About the author, Orlaith Reedy Patent Attorney 

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